Policies and Issues Regarding Intellectual Property Developed at Iowa State University Presentation to Energy Center Grantees/ BECON Users 12/12/03 Kenneth Kirkland, Ph.D. Executive Director, ISURF Director, OIPTT

Intellectual Property (IP) IP includes any invention, discovery, technology, scientific or technological development, computer code, copyrightable work, integrated circuit mask work, trademarks, service marks, trade secrets and tangible research property (e.g., germplasm, vectors, software and new material samples). IP includes any invention, discovery, technology, scientific or technological development, computer code, copyrightable work, integrated circuit mask work, trademarks, service marks, trade secrets and tangible research property (e.g., germplasm, vectors, software and new material samples).

Policies The Iowa State University Research Foundation (ISURF) owns and manages certain IP for Iowa State University. The Iowa State University Research Foundation (ISURF) owns and manages certain IP for Iowa State University. IP ownership is assigned to ISURF, according to the University’s policies by inventors or creators who are employees* of the University or students obligated to assign under University funding projects. IP ownership is assigned to ISURF, according to the University’s policies by inventors or creators who are employees* of the University or students obligated to assign under University funding projects. * Faculty, staff, graduate assistants, postdoctoral fellows and visiting scholars and scientists visiting scholars and scientists

Authority In 1982, the Board of Regents approved the current “Patent Policy” for ISU. In 1982, the Board of Regents approved the current “Patent Policy” for ISU. This Policy may be Found on the ISURF Web site at This Policy may be Found on the ISURF Web site at In addition, the IP handbook, the Faculty Hand Book and the Office Procedure Guide include information on IP policies and procedures. In addition, the IP handbook, the Faculty Hand Book and the Office Procedure Guide include information on IP policies and procedures.

Mechanism of IP Assignment Fill out an Intellectual Property Disclosure and Record Form and submit to OIPTT. Fill out an Intellectual Property Disclosure and Record Form and submit to OIPTT. This can be done electronically from our Web site ( This can be done electronically from our Web site ( If you have questions or concerns, please contact Patsy Duncan at ( , pduncan). If you have questions or concerns, please contact Patsy Duncan at ( , pduncan).

Public Disclosure What is a Public Disclosure? A public disclosure occurs every time information about a research project is shared with individuals who are not ISU employees and who have not signed a confidentiality agreement prior to receiving the information. A public disclosure occurs every time information about a research project is shared with individuals who are not ISU employees and who have not signed a confidentiality agreement prior to receiving the information. A public disclosure can be a formal presentation, an informal discussion, a published journal article, information posted on a web site and even notes jotted down on a napkin and shared during a social event. A public disclosure can be a formal presentation, an informal discussion, a published journal article, information posted on a web site and even notes jotted down on a napkin and shared during a social event.

Public Disclosure What is a Public Disclosure? (continued) University seminars are considered to be public disclosures because they are open to the public. University seminars are considered to be public disclosures because they are open to the public. A lab meeting would not be a public disclosure if persons external to the lab and ISU were excluded. A lab meeting would not be a public disclosure if persons external to the lab and ISU were excluded. Reference: Industry Tip Sheet Volume 5:1 by Lisa Lorenzen-Dahl (biotech.iastate.edu/Industry_resources/tip_sheet_index_html).

Public Disclosure How can public disclosure affect our IP? In the absence of a signed confidentiality or non- disclosure agreement between the provider and the recipient of the information and/or materials related to an invention, valuable patent rights can be lost. In the absence of a signed confidentiality or non- disclosure agreement between the provider and the recipient of the information and/or materials related to an invention, valuable patent rights can be lost. Note: All confidential information, whether shared or received should be marked “CONFIDENTIAL” Note: All confidential information, whether shared or received should be marked “CONFIDENTIAL” Specifically, if no patent filing has already been made, foreign patent rights are immediately forfeited and filing in the U.S. must be made within one year of disclosure. Specifically, if no patent filing has already been made, foreign patent rights are immediately forfeited and filing in the U.S. must be made within one year of disclosure.

Transfer of Materials If you transfer materials generated in your lab to a third party, these should be accompanied by a Material Transfer Agreement (MTA). If you transfer materials generated in your lab to a third party, these should be accompanied by a Material Transfer Agreement (MTA). Failure to do this may result in loss of valuable IP rights. Failure to do this may result in loss of valuable IP rights. Reference: Industry Tip Sheet Volumes 4:7 and 5:2 by Lisa Lorenzen-Dahl

Signature Authority All documents that obligate ISU personnel, facilities, IP, or other resources in any way require an authorized ISU signature. All documents that obligate ISU personnel, facilities, IP, or other resources in any way require an authorized ISU signature. ISU faculty and staff members are not considered authorized signatories for contracts, grants, material transfer agreements, confidentiality agreements or any other document that legally binds ISU. ISU faculty and staff members are not considered authorized signatories for contracts, grants, material transfer agreements, confidentiality agreements or any other document that legally binds ISU. Thane Peterson, Director of OSPA is the designated signatory for documents related to externally funded projects and other agreements such as confidentiality and material transfer agreements. Thane Peterson, Director of OSPA is the designated signatory for documents related to externally funded projects and other agreements such as confidentiality and material transfer agreements.

Signature Authority Ken Kirkland, Executive Director, ISURF is the designated signatory for documents related to IP disclosed to that office. Ken Kirkland, Executive Director, ISURF is the designated signatory for documents related to IP disclosed to that office. It is also appropriate for the PI to sign agreements such as MTAs. It is also appropriate for the PI to sign agreements such as MTAs. Reference: Industry Tip Sheet Volume 5:3 by Lisa Lorenzen-Dahl